No Fear, Inc.v.Frank Scott White

Trademark Trial and Appeal Board

Jan 31, 2002

No. 91106928 (T.T.A.B. Jan. 31, 2002)

1/31/02

Paper No. 29
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

No Fear, Inc.
v.
Frank Scott White
_____

Opposition No. 106,928
to application Serial No. 75/193,223
filed on October 21, 1996
_____

Kit M. Stetina and Darren S. Rimer of Stetina Brunda
Garred & Brucker for No Fear, Inc.

Ernest Kettelson of Kettelson Law Offices, Ltd. for Frank
Scott White.
______

Before Cissel, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Frank Scott White has filed an application to
register the mark SNOW FEAR for “clothing articles,
namely T-shirts, Sweat Shirts and Hats.”1
Registration has been opposed by No Fear, Inc.
on the ground that since long prior to the filing date of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 106,928
2
applicant’s application, opposer has used the marks NO
FEAR and NO FEAR and design for a wide variety of wearing
apparel and other products; and that applicant’s mark
SNOW FEAR, when used in connection with the identified
goods, so resembles opposer’s previously used and
registered marks for its products as to be likely to
cause confusion, mistake or deception. Opposer has
pleaded ownership of a number of registrations for its
marks, the most pertinent of which are: Registration No.
1,737,420 issued December 1, 1992 (Section 8 affidavit
filed) for the mark NO FEAR and design as set forth
below,

for “decals” in class 16; “wearing apparel; namely, T-
shirts, shirts, shorts, pants, sweat shirts, sweat pants,
hats, visors, shoes, sandals, and belts” in class 25; and
surfboards, skateboards, surf leashes, and protective

1 Serial No. 75/193,223 filed October 21, 1996, alleging dates
Opposition No. 106,928
3
articles; namely, knee pads, elbow pads, and helmets for
use in skateboarding” in class 23; Registration No.
1,842,402 issued June 23, 1994 (Sections 8 & 15 affidavit
filed) for the mark NO FEAR and design as shown below,

for “footwear; namely, shoes, sandals, and thongs;”
Registration No. 1,855,031 issued September 20, 1994
(Sections 8 & 15 affidavit) for the mark NO FEAR in typed
capital letters for “jewelry; namely, watches, bracelets,
earrings and anklets” in class 14; “clothing and
footwear, namely, pants, shirts, shorts, T-shirts,
bathing suits, jackets, sweat shirts, visors, sandals and
shoes” in class 25; Registration No. 1,856,752 issued
October 4, 1994 (Sections 8 & 15 affidavit filed) for the
mark NO FEAR and design as shown below,

of first use and first use in commerce on September 1, 1995.
Opposition No. 106,928
4

for “printed matter, namely decals” in class 16 and
“wearing apparel, namely, T-shirts, shirts, sweatshirts,
tank tops, shorts, pants, visors, swim trunks, shoes and
caps” in class 25; Registration No. 1,978,563 issued June
4, 1996 for the mark NO FEAR and the design of a man on a
bike, as shown below,

for “wearing apparel, namely shorts, pants, shirts, T-
shirts, sweat shirts, sweatpants, visors, belts and
shoes”; Registration No. 1,978,596 issued June 4, 1996
(Sections 8 & 15 affidavit filed) for the mark NO FEAR
and design as shown below,

for “wearing apparel, namely T-shirts, shirts, shorts,
pants, sweatshirts, sweatpants, hats, visors, shoes,
thong footwear and belts;” and Registration No. 1,978,597
Opposition No. 106,928
5
issued June 4, 1996 (Sections & 15 affidavit filed) for
the mark NO FEAR and design as shown below,

for “wearing apparel; namely, T-shirts, shirts, shorts,
pants, sweatshirts, sweatpants, hats, visors, shoes,
thong footwear, and belts.”
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
We must first consider opposer’s objections to
certain materials submitted by applicant under notice of
reliance. In particular, opposer objects to applicant’s
submission of the specimens in the involved application,
citing Trademark Rule 2.122(b)(2) which provides, in
pertinent part, that “specimens in the file of an
application for registration
. . . are not evidence on behalf of the applicant or
registrant unless identified and introduced in evidence
as exhibits during the period for taking testimony.”
Further, opposer objects to the submission of applicant’s
responses to opposer’s request for production of
documents, pointing out that there is no provision in the
Trademark Rules of Practice for applicant to introduce
Opposition No. 106,928
6
its own responses to a request for production of
documents. Finally, opposer objects to the submission of
applicant’s responses to all of opposer’s interrogatories
on the ground that opposer made of record applicant’s
responses to only certain of opposer’s interrogatories
and that applicant failed to provide, as required by
Trademark Rule 2.120(j)(5), a written statement
explaining any reasons why applicant needed to rely on
the additional discovery responses. For the reasons set
forth by opposer, each of its objections to the above
materials is well taken. In view thereof, the materials
do not form part of the record in this case and we have
not considered the materials in reaching our decision
herein.
The record includes the pleadings; the file of the
involved application; and the testimony (with exhibits)
of opposer’s vice president, Marty Moates. Opposer also
submitted under notice of reliance applicant’s responses
to certain of opposer’s discovery requests; the discovery
deposition of applicant Frank Scott White; and copies of
excerpts from printed publications.
Applicant did not take testimony. However,
applicant submitted under notice of reliance a
declaration executed by opposer’s vice president Marty
Opposition No. 106,928
7
Moates. While such a declaration was not stipulated in
writing (See Trademark Rule 2.123(b) and further, is not
proper subject matter for a notice of reliance, we note
that opposer did not object to the declaration, but has
instead treated it as of record. Thus, we will we treat
the declaration as part of the record in this case.
The parties have fully briefed the case, but no oral
hearing was requested.
The record shows that opposer is in the business of
manufacturing, marketing, merchandising and licensing
goods and services under the NO FEAR and NO FEAR and
design marks.
Opposer’s vice president, Marty Moates testified that
opposer adopted the NO FEAR mark to establish a brand
recognition and source indication of a particular
positive image or attitude, namely encouraging sports
enthusiasts to face their fears, live their dreams and to
push themselves harder. Opposer began business in 1990
and its total sales have exceeded $500,000,000. For the
past several years, opposer’s sales have been
approximately $50,000,000 per year. According to Mr.
Moates, the majority of opposer’s sales are for T-shirts,
sweatshirts and caps, all of which bear one of opposer’s
NO FEAR registered marks. Opposer sells its wearing
Opposition No. 106,928
8
apparel items to over 14,000 retail outlets, including
stores such as Nordstrom, Macy’s, JCPenny’s, Miller
Outpost, Gadzooks, and Brass Buckle. Opposer also sells
its wearing apparel items at sporting goods stores and
ski shops. The goods are relatively inexpensive;
opposer’s T-shirts retail for around $16.00 and its
sweatshirts retail for around $44.00.
Opposer spends approximately $12,000,000 per year
advertising its products. Opposer has advertised during
the Super Bowl, on ESPN, and on a monthly basis in
magazines such as NASCAR, Bike, Surfer, Football,
Basketball, BMX, Motocross, Mountain Bike, Surfing,
Formula 1, and Racer. Opposer also promotes its products
and image through over 140 sports figures in the United
States and around the world. Many of opposer’s
advertisements show athletes engaged in action sports or
winter sports such as skiing, snowmobiling and the like.
Opposer has engaged in cross-promotions with such
companies as Burger King, Coca-Cola, Sprite, Chrysler
Corporation, Mars Candy Company and Pepsi.
Opposer has vigorously protected its trademarks
against counterfeiters and infringers. Opposer is a
member of the International Anti-Counterfeiting Coalition
Opposition No. 106,928
9
and in 1997 alone opposer spent $1,100,000 enforcing its
trademark rights.
Applicant Frank Scott White testified during his
discovery deposition that he sells T-shirts, sweatshirts,
hats and decals under the mark SNOW FEAR. According to
Mr. White, he adopted the SNOW FEAR mark several years
prior to 2000 and it was his intent to encourage people
to get out and go in the snow more. Applicant’s goods
are primarily marketed for winter activities and the
goods are primarily sold at ski shops, snowmobiling shops
and by direct sales. Mr. White testified that he sells
between one and fifty SNOW FEAR T-shirts and sweatshirts
on average per month. Applicant’s T-shirts and
sweatshirts generally feature a slogan on the back.
Applicant’s sweatshirts retail for about $25.00 and his
T-shirts and hats retail for under $20.00. Applicant has
advertised in two magazines, namely Snow West and Mod-
Stock.
Priority of use is not in issue inasmuch as opposer
introduced copies of its pleaded registrations through
the testimony of Mr. Moates and he testified that each of
the registrations is subsisting and owned by opposer. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Each of opposer’s
Opposition No. 106,928
10
pleaded registrations on the Principal Register is prima
facie evidence of the use of the mark shown therein for
the goods identified in the registration since the filing
date of the application, which matured into the
registration. See Andrea Radio Corp. v. Premium Import
Co., Inc., 191 USPQ 232 (TTAB 1976).
This brings us to the issue of likelihood of
confusion. Our determination of likelihood of confusion
under Section 2(d) must be based on an analysis of all
the relevant and probative facts in evidence. In re E.
I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
Turning first to the goods, applicant’s T-shirts,
sweatshirts and hats are identical and otherwise closely
related to the wearing apparel items listed in opposer’s
pleaded registrations. There being no limitations in the
identification of goods in either applicant’s application
or opposer’s registrations, it must be presumed that both
parties’ wearing apparel would travel in all the normal
channels of trade for such goods (e.g., general sporting
goods stores, specialty sporting goods shops, department
stores, and mass merchandisers), and be sold to all the
usual purchasers for goods of this nature, namely, the
general public.
Opposition No. 106,928
11
We turn next to a consideration of the marks. The
test for confusing similarity is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered
under the respective marks is likely to result. The
focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). The marks at issue
may not be dissected but rather must be considered in
their entireties. However, it is well settled that one
feature of a mark may be more significant than another,
and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, “when
marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Opposition No. 106,928
12
Applying the above principles to the marks at issue,
we find that applicant’s mark SNOW FEAR and opposer’s
marks NO FEAR and NO FEAR and design are substantially
similar in commercial appearance, sound and connotation.
Applicant’s mark and the word portion of opposer’s marks
follow the same
pattern – a one syllable word followed by the word FEAR.
Moreover, the marks sound alike because SNOW and NO
rhyme. The word FEAR is the dominant portion of
applicant’s and opposer’s marks and the portion most
likely to be remembered by consumers. In addition,
applicant’s and opposer’s marks have similar connotations
in that they encourage persons to overcome their fears.
Further, opposer’s NO FEAR marks are inherently
distinctive, and the evidence of record indicates that
opposer’s use and promotion of the marks for wearing
apparel has been extensive, with the result that the
marks have acquired considerable goodwill and strength.
Thus, opposer’s marks are entitled to a broad scope of
protection. As to applicant’s argument in its brief that
marks including the word “FEAR” are weak marks, applicant
offered no evidence of third-party uses of marks
including the word

Opposition No. 106,928
13
“FEAR” for goods of the type involved here.2
While we recognize that there have been no instances
of actual confusion, we are cognizant that instances of
actual confusion are difficult to discover. More
importantly, we cannot conclude on the limited evidence
of use of applicant’s mark that there has been any
meaningful opportunity for confusion to have occurred.
In any event, the test under Section 2(d) of the
Trademark Act is not actual confusion, but likelihood of
confusion.
In view of the foregoing, we conclude that
purchasers familiar with opposer’s T-shirts, sweatshirts,
caps and other items of wearing apparel offered under the
marks NO FEAR and NO FEAR and design would be likely to
believe, upon encountering applicant’s mark SNOW FEAR for
T-shirts, sweatshirts, and hats, that the goods originate

2 A mere list of third-party registrations in a brief is not the
proper way to make such registrations of record. Rather, plain
copies of the registrations themselves or the electronic
equivalent thereof must be submitted during the offering party’s
testimony period. Moreover, even if applicant had properly made
the registrations of record, we should point out that third-
party registrations, in and of themselves, are entitled to
little weight in evaluating whether there is a likelihood of
confusion. See, e.g. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), and In re
Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983). This
is because third-party registrations are not evidence of what
happens in the marketplace. Also, we should note that none of
the “FEAR” marks listed in applicant’s brief is as similar to
opposer’s marks as is applicant’s mark.
Opposition No. 106,928
14
with or are somehow associated with or sponsored by the
same entity.
Decision: The opposition is sustained.